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UNITED STATES PATENT OFFICE. 



TS 535 
• U5 
1885 
Copy 1 



APPEAL OF CLEVELAND HICKS 



FROM 



THE COMMISSIONER OF PATENTS. 



STATEMENT OF THE COMMISSIONER, DEFINING "INTERLOCUTORY 
ACTIONS" AND "REJECTIONS." 



D. P. HOLLOWAY, 

COMMISSIONER. 



WASHINGTON: 
GOVERNMENT PRINTING OFFICE. 

1885. 

1284K 



N 5 1909 

iA or ft 






in the matter of the application of william cleveland hicks 
fob an appeal from a decision of the commissioner of pat- 
ents to the supreme court of the district of columbia. 

United States Patent Office, 

Washington, May 21, 1864. 

On a very careful consideration of the facts of the case in this pro 
posed appeal, and of the law applicable thereto, having fully satisfied 
myself that such proposed appeal is without color or warrant of law, 
and that I have no authority or right to certify the same to the honor- 
able Supreme Court of this District, I deem it proper to place on record 
for future proceedings in this office a statement of the reasons why, in 
my judgment, the desired appeal cannot be entertained as prayed for. 

The facts of the case on which the question arises are, that a patent 
was granted to William Cleveland Hicks, dated the 10th day of March, 
1857, for a certain improvement in breech-loading lire-arms; that on 
the 4th of February, 1864, the said Hicks surrendered his said patent 
and made application for the reissue thereof, under the terms of the 
thirteenth section of the act of July 4, 1830 ; that on looking into the 
said application for reissue it was found that four clauses of claim were 
drawn to improvements in the construction of the arm, and two clauses 
of claim to improvements in the cartridge to be used in such arm ; where- 
upon the said applicant was informed by official letter dated February 
15, 1864, that his said application was regarded as presenting a faulty 
duplicity of invention, contrary to the restriction of the twelfth section 
of the printed rules of this office, (which requires that " two or more 
distinct inventions should not be claimed under one application for let- 
ters patent;") that the said applicant, by letter dated February 16, 1864, 
in reply to the Commissioner, "declined both to cancel any part of the 
specification, and to make application for a divided reissue," and re- 
quested "that the case may be examined on its merits;" that the said 
applicant was informed by official letter dated February 19, 1864, that 
" the examination thereof is suspended until the requirement of a proper 
unity of subject-matter is complied with;" that the said applicaut, by 
letter dated February 20, 1864, made " application for au appeal from 
the decision of the principal examiner in the above matter, and re- 
quested that the same may be heard by the honorable board of exam- 
iners-in-chief;" that the said applicant was informed by official letter 
datedMarch 28, 1864, that as his "said application had not been rejected 
by the examiner" it " was not in a condition for appeal to the exam- 
iners-in-chief" under the provisions of the law, and the former opinion 



of the office must be " reaffirmed;" and that the said applicant, by- 
petition dated April 29, 1864, made request of the Commissioner in the 
usual form "that an appeal may be allowed him from the decision of 
this Department," the said request presenting the said applicant's 
u reasons for appealing," and being accompanied with the petition of 
appeal to the honorable Supreme Court of the District of Columbia. 
1 From the foregoing it will appear that the three above- mentioned 
letters, dated, respectively February 15, February 19, and March 28, 
1864, which comprise the entire official correspondence in the case, 
(as is shown by the indorsement on the file thereof,) contain no rejec- 
tion of the said application, nor anything analogous thereto. Not 
only has no opinion been expressed (even by the merest indirection) 
as to the novelty or admissibility of the said applicant's claims, but 
there is no intimation that even an examination of this point has been 
made, and, for all that appears to the contrary, the said applicant's six* 
claims may be held to be entirely allowable, and even entitled to inde- 
pendent patents. On this state of facts, I proceed to consider the bear- 
ing of the several acts of Congress upon the question of the rights and 
limits of appeal from a decision of the Commissioner. 

By the seventh section of the act of July 4, 1836, (Twenty-fourth Con- 
gress, session 1, chap. 357,) it is made the duty of the Commissioner, 
on the due filing of an application, (as prescribed by the section preced- 
ing,) to make or cause to be made an examination of the alleged new 
invention claimed in such application ; and if it shall appear (1) that the 
applicant was not the first inventor thereof, or (2) that, being the first 
inventor, he had allowed it to be in public use or on sale previous to his 
application u for more than two years," or had otherwise " abandoned his 
invention to the public," (section 7, act of March 3, 1839, Twenty-fifth 
Congress, session 3, chap. 88,) or (3) that his invention was useless or 
trivial, or (4) that his exposition of his invention was incomplete and 
insufficiently communicative, it is the Commissioner's duty to refuse the 
application and notify the applicant of the grounds of his refusal, suffi- 
ciently to enable the said applicant to determine whether he will con- 
tinue, modify, or abandon his application. 

Besides these specified grounds for refusing the grant of letters pat- 
ent, there is none other designated by any act of Congress. It plainly 
appears, therefore, that the Commissioner has no legal authority to 
reject an application for any other reasons than those actually enumer- 
ated. On the other hand, if it shall appear from the examination that 
the applicant was the first inventor, that he had not allowed his invention 
to go into public use, that his invention was sufficiently useful and im- 
portant, and that he did completely and intelligibly describe the same, 
it is by the same seventh section made the duty of the Commissioner 
to issue a patent therefor. 

It is perfectly obvious, however, that many conditions may exist in 
which the Commissioner is unable to either grant or refuse a patent' 



under the terms of the said seventh section. All the requirements of 
the sixth section of the act may have been literally complied with by 
the applicant, and all the conditions precedent stated in the seventh 
section may be fully satisfied by his application, and yet as manifestly 
it may be improper and impossible for the Commissioner to issue at 
once the patent, in the actual state of the application, without further 
action on the part of the applicant himself. 

Thus, to employ a single illustration, the specification may have been 
written with a soft lead pencil, (and the statute does not direct it to be 
written otherwise,) or the duplicate drawings required may have been 
inscribed (with sufficient precision and clearness) on two wooden boards 
with a crayon of charcoal, or on two pieces of oil cloth with a crayon 
of chalk, (and the statute does not prohibit such sketches,) in which 
case it is plainly the Commissioner's duty to suspend the issue, and in- 
form the applicant in substance that his specification and drawings, as 
being altogether unfitted for durable ] reservation, could not be admit- 
ted ; that they would be equally unsuitable either for continued refer- 
ence among the official records or for exhibition in the patent, (of which 
one of his drawings must necessarily form a part;) and that for the 
benefit of future inventors, whose interests no less than his own are 
intrusted to the guardianship of the Commissioner, and for the needful 
convenience of the office itself in the discharge of the duties imposed 
upon it, his application (however patentable its subject-matter) would 
have to be postponed until he had furnished the office with proper and 
neatly executed papers. 

In carrying out the various acts of Congress in relation to the subject 
of patents, and so administering the conduct of the Patent Office as 
most effectually to develop and realize the spirit of these enactments, 
(that is, in the exercise of his executive functions,) the Commissioner is 
properly and necessarily invested with a large range of discretionary 
power, responsible for any abuse of such ministerial discretion (as must 
be the case in every such deposit of trust) directly to his official supe- 
riors. 

For the convenient administration of the high and responsible duties 
of his office; for securing an equitable unity of action in its various de- 
partments, and a uniformity of process and of presentation of papers and 
exhibits from its suitors; for providing most effectually for the good con- 
dition and ready preservation of its all-important records of inventions ; 
for facilitating the onerous and important business of examination re- 
quired by law to be made into the originality or pre-existence of alleged 
inventions; for the avoidance of needless controversies with querulous 
or exacting petitioners, (fortunately very few in number,) and for ad- 
vancing the individual and related interests of applicants themselves, 
established "rules and directions," well considered, publicly announced, 
and judiciously enforced, are indispensable. 

Such a system of regulations, adopted and administered by every 



Commissioner from tbe organization of the Patent Office, (with such 
modifications and additions as successive experiences have suggested,) 
has continued to govern, no less the official action than the proceed- 
ings of applicants to the present time — regulations which, in no just 
sense, can be accounted as really impairing any equitable rights, and 
which certainly do not contravene in any respect the liberal provisions 
of the law for the encouragement and protection of inventors. 

It is in the execution and maintenance of the " rules and directions 
for proceedings in the Patent Office" that a very considerable portion 
of the official correspondence is employed. From the ignorance of many 
applicants as to the real character of these requirements, and the inad- 
vertence of others who design to faithfully observe them ; from the ina- 
bility of some to appreciate the importance of general rules, and the 
impatience of restraint felt by others — through caprice or the sentiment 
of some accidental or temporary inconvenience in obedience to law or 
system — the various restrictions upon the negligent or imperfect writing 
of the specification ; upon the size, materials, and character of the draw- 
ings; upon the extent or the sufficiency of the model; upon tbe nature 
and methods of amendments; upon the inclusion of separate inventions 
in a single application, and numerous other specific incidents not di- 
rectly provided for by the acts of Congress, and which restrictions are 
intended to define more precisely the manner in which inventors should 
avail themselves of the benefits of those acts, furnish constant subjects 
of correspondence, and sometimes of prolonged discussion, between the 
applicant and the office. When from a stubborn and willful disregard 
of the deliberately settled and clearly expressed directions of the office 
a claimant refuses to place his application in such a condition that it 
can, in the view of the Commissioner, be properly ordered to issue or 
examined to that end, the latter has no resource but to inform the ap- 
plicant that the further consideration of his case is suspended until the 
official requirement is complied with. 

By the uniform practice of the office from its earliest days, all such 
applications, whatever be the nature of this "intermediate" action 
upon them, are distinguished as "postponed" cases, are technically ac- 
counted as "new" cases, (however long they may have been on file in 
the office,) in opposition to "return" cases, or those which have been 
actually rejerted; are kept by the draughtsman (who is the official cus- 
todian of all application files) in a separate depository from such "re- 
jected" cases, and have their drawings preserved in a different class 
of portfolios from those appropriated to "rejected" drawings. 

It has appeared proper and necessary to say thus much, and to so 
dwell upon these apparently unimportant particulars, in order to exhibit 
as clearly as possible tbe distinction wbich has ever been observed in 
this office between a "final" and an "intermediate" action, between a 
decision on the patentable merits of an invention (under the require- 
ments of the seventh section of the act of 1836) and what may be called 



an " interlocutory judgment" on its form of presentation, (under the 
office rules j) in short, between a refusal to grant a patent and a postpone- 
ment of the examination. By the same section of the act of 1836, which 
prescribes the Commissioner's duty and defines his authority to deny a 
patent, it is further provided that if upon a reconsideration of an ap- 
plication rejected by bim (in whole or in part) he is still of opinion that 
the dissatisfied applicant is not entitled to a patent, (even upon amend- 
atory and restricted claims,) the said dissatisfied applicant may there- 
upon, on written appeal, have the decision of a " board of examiners," 
(consisting of three competent and disinterested persons to be ap- 
pointed by the Secretary of State, and to act under oath,) who are au- 
thorized, on a full and impartial review of such adverse opinion and de- 
cision of the Commissioner, to affirm or reverse, in whole or in part, the 
Commissioner's said decision. 

It appears too obvious for comment that this appellate jurisdiction of 
the " board of examiners," full and complete as it is made over all the 
questions specified in the said seventh section, can by no reasonable con- 
struction of law be extended to any other questions which may arise 
between the applicant and the office. The special requirement that the 
said " board of examiners " shall be furnished with a written certificate 
from the Commissioner, u stating the particular grounds of his objection 
and the part or parts of the invention which he considers not entitled to 
be patented," seems to preclude a rational question of this position. 
By the folio wiog or eighth section of the same act the decision oi the 
Commissioner in interference trials between rival applicants (which by 
a clear construction falls within the class of refusals embraced by the 
seventh section) is also — for the avoidance of a possible doubt — ex- 
pressly made amenable to the same appellate jurisdiction. No other 
case of decision by him is by any law included in the category of appeal- 
able judgments. 

By the eleventh section of the act of March 3, 1839, (Twenty-fifth 
Congress, session 3, chap. 88^) it is enacted " that in cases where an 
appeal is now allowed by law from the decision of the Commissioner of 
Patents to a board of examiners provided for in the seventh section 
of the act to which this is additional, the party instead thereof shall 
have the right to appeal to the Chief Justice of the District Court of the 
United States for the District of Columbia," which in precise terms 
transfers to the Chief Justice of the District the same appellate juris- 
diction (and no more) previously vested in the board of examiners. By 
the first section of the act of August 30, 1852, (Thirty-second Congress, 
session 1, chap. 107,) the same appeal " may also be made to either of 
the assistant judges" of the said court. 

By the third section of the act of March 3, 1863, (Thirty- seventh Con- 
gress, session 3, chap. 91,) organizing the " Supreme Court of the Dis- 
trict of Columbia," it is enacted that the said court u shall possess the 
same powers and exercise the same jurisdiction as is now possessed and 



8 

exercised by the Circuit Court of the District of Columbia, and the jus- 
tices of the court so organized shall severally possess the powers and ex- 
ercise the jurisdiction now possessed and exercised by the judges of the 
said Circuit Court ; " which again transfers the same appellate jurisdic- 
tion over the Commissioner's decisions (a,nd no more) resident in the pre- 
ceding tribunals, respectively. 

This comprises the history of the legislation of Congress on the sub- 
ject of appeals from a decision by the Commissioner ; and it will be 
plainly seen that in no case throughout this history is an appeal pro- 
vided for any other decision than one expressly refusing the grant of a 
patent. 

If any confirmation were needed of a position which appears to be 
so necessary a construction of the statutes covering the subject, it is 
abundantly afforded in repeated judicial decisions upon this very point. 

In the matter of Edwin Janney's appeal from a decision of the Com- 
missioner of Patents, Commissioner Burke, in presenting the case, re- 
sponded to the reasons of appeal by urging that his official act in 
refusing to consider a case in a certain condition of facts was " not a 
judicial but an executive act," and that therefore it was " not an act 
of which the honorable Chief Justice has jurisdiction." And, again, 
that as " the decision in this case does not refuse letters patent for the 
alleged invention, bat simply refuses to again take up and examine the 
alleged invention," for this reason it was not appealable under the law, 
and not within the jurisdiction of the court. 

Chief Justice Cranch, in his decision rendered December 14, 1847, held 
that " inasmuch as the decision of the Commissioner from which the 
appeal is taken neither affirms nor denies the right of the appellant to 
the patent (which he claims) upon the merits of the supposed inven- 
tion, it is not such a decision as is the subject of appeal under the act of 
July 4, 1836, l to promote the progress of the useful arts,' &c, or the 
act of March 3, 1839, in addition to that act, and that, therefore, I have 
not jurisdiction of this appeal, which is therefore hereby dismissed." 
(Eecorded in " Book of Appeals " No. 1, page 220.) 

In the matter of the appeal from a decision of the Commissioner by 
Horace D. Wade, appellant, v. Moses M. Mathews, appellee, it was con- 
tended by Mr. Burke, of counsel for the appellee, that by the act of 1836 
there were but " four grounds on whi ch the Commissioner was author- 
ized to refuse a patent ; and it was to these points alone that the revision 
of the board of examiners was confined," " and therefore, inasmuch as 
the same jurisdiction, and that only, which the board of examiners pos- 
sessed was transferred by the eleventh section of the act of March 3, 
1839, to the judge, he cannot embrace in his review of the decision of 
the Commissioner any other matters than those which were legally cog- 
nizable by the board of examiners." " Congress, in giving him jurisdic- 
tion over the decisions of the Commissioner of Patents in certain speci- 
fied cases on appeal, (which must be his ultimate, not interlocutory, de- 



cision,) never contemplated giving him unlimited power over the acts of 
the Commissioner, thus making the judge himself, in fact, the Commis- 
sioner of Patents." 

It was held by Chief Justice Cranch (in his decision rendered September 
4, 1850) that, as regarded the subjects of the appellant's first, second, 
third, fourth, fifth, sixth, and seventh reasons of appeal, li they were 
matters within the discretion of the Commissioner, and over which the 
judge had no control nor jurisdiction, these matters not having been 
made the subjects of appeal nor valid grounds of appeal." And, again, 
in regard to questions embraced in the appellant's ninth reason of ap- 
peal, "these were matters for the consideration and within the discre- 
tion of the Commissioner, until the patent should be finally issued, and 
are not made the subject of appeal. Nothing preliminary to (the ques- 
tion of) the issuing of the patent is a valid ground of appeal, unless 
made so by the law." (Recorded in " Book of Appeals" No. 1, page 403.) 

It may appear calculated to weaken the force of what, in its simple 
presentation, is so direct and conclusive, to urge any additional consid- 
eration upon the subject; but there is another application of law to the 
question no less clear and decisive, and which is so pertinent to this 
point that I cannot forbear presenting it, even at the risk of some pro- 
lixity. 

It was enacted by the second section of the act of March 2, 1861, (Thirty- 
sixth Congress, session 2, chap. 88,) "that for the purpose of securing 
greater uniformity of action in the grant and refusal of letters patent," 
(not in the execution of the Commissioner's rules and directions, but) 
if in the grant and refusal of letters patent, there shall be appointed by 
the President, by and with the advice and counsel of the Senate, three 
examiners -in-chief," "whose duty it shall be, on the written petition of 
the applicant for that purpose being filed, to revise and determine 
upon the validity of decisions made by examiners when adverse to the 
grant of letters patent, and also to revise and determine in like manner 
upon the validity of the decisions of examiners in interference cases, 11 
(being u governed in their action by the rules to be prescribed by the 
Commissioner of Patents,") and " that from their decision appeals may 
be taken to the Commissioner of Patents in person." 

In this somewhat anomalous provision for an " appeal " within the 
Patent Office (and against itself) it will be observed that precisely the 
same class or classes of cases are expressly designated as have been 
shown to be embraced within the provisions of the seventh section of the 
act of 1836 for an appeal without the office, and that no other class of 
cases or of actions by the examiner has been so designated. 

In the matter of the appeal from a decision ol the Commissioner by 
Thomas Snowden, appellant, v. Ephraim Pierce, appellee, Chief Justice 
Dunlop, in his decision rendered June 25, 1861, held that "under the 
act of 2d of March, 1861, the primary examiners and the examiners-in- 
chief are, by the terms of the act, recognized as judicial officers acting 



10 

independently of the Commissioner." "The Commissioner, under thi& 
act of March, 1861, can give no judgment till the appeal reaches him, 
and this cannot be done till the judgment of the primary examiner has 
first been submitted to the examiners-in-chief. The judges of the Circuit 
Court of the District of Columbia, by law, can entertain no appeal ex- 
cept from the decision of the Commissioner." " It follows, therefore, 
that no judgment now in any patent case, of the character above de- 
scribed, can be given by the Commissioner till it reaches him in due 
course by appeal ; that is to say, the applicant must go from the primary 
examiner by appeal to the examiners-in-chief, and from them by appeal 
to the Commissioner, and lastly from the Commissioner to the judges 
of the Circuit Court." 

"This appeal to the judges still exists ; but it can only be exercised 
after the applicant has gone the rounds of all the tribunals created by the 
new law, and after the final decision of the Commissioner. ," (Recorded in 
"Book of Appeals" No. 3, page 469.) 

Now, it necessarily results from this application of the new law of 
1861 that if the examiner does not reject an applicant — that is, if he 
does not expressly refuse him a patent, (on the whole or on a part of his 
specification of claim) — there is not provided by said act any appeal 
from his decision to the " examiners-in-chief." In any preliminary or 
intermediate action he may take on an application before him (as upon 
a consideration of the observance or non-observance of the official rules 
in the presentation of the application) the examiner can only be re- 
garded as acting in his ministerial capacity, and immediately under the 
authority of the Commissioner, precisely as he always has acted since 
the existence of his office. It is clearly only in the specified case of a 
final rejection of an application (or of an adverse decision in an interfer- 
ence suit) that he can be considered as vested with this " independent" 
judicial character assigned him in the above-cited decision upon the 
force and intendment of the law. And this "judicial" act of rejection 
can as clearly be properly exercised by him only under the legal war 
rant of the provisions of the seventh section of the act of 1836. 

But if the examiners-in-chief, under the said second section of the 
recent act of 1861, have no appellate jurisdiction over the judgments or 
proceedings of the examiners, (excepting in the specified instances of a 
judicial decision by him adverse to the grant of a patent,) it is equally 
clear by the opinion of Chief Justice Dunlop above quoted that the 
same exception unavoidably attaches to the appellate jurisdiction of 
the Commissioner himself, and, by an equally inevitable logic, to that of 
the " Circuit Court of the United States for the District of Columbia," 
or its immediate successor, the " Supreme Court of the District of Co- 
lumbia." 

I must, therefore, most confidently hold that there is no authority of 
law for this proposed appeal of Mr. Hicks from my decision of March 
28, 1864, since it is not such a decision as is particularly specified in the 



11 

said second section of the act of 1861, and for the obtaining of which 
a special fee of $20 is by the tenth section of the same act required 
to be paid into the office. So far from the applicant in this case having 
"complied with the requirements of the several acts of Congress," as 
alleged by him in his petition of appeal, filed April 29, 1864, (which 
requirements form the conditions precedent on which alone an appeal 
can be entertained,) there has been no preceding appeal taken in this 
matter " to the Commissioner of Patents in person," and no fee of $20 
has been paid into the office for any such appeal, as required by the 
said second and tenth sections of the act. 

Were it possible by ingenious suggestions of fitness or of propriety, 
of supposed expediency or of fancied analogies, to avoid the force of 
this significant exclusion from appeal of all other than "final" actions 
of the examiner, such attempted avoidance is utterly frustrated by the 
absolute and explicit prohibition of the third section of the said act of 
1861, " that no a/ppeal shall be alloived to the examiners-in-chief from 
the decisions of the primary examiners (except in interference cases) 
until after the application shall have been twice rejected." 

Here, then, we have a conclusion of question. Here is the positive 
interdiction of all appeals from any preliminary or " intermediate" de- 
termination of the examiner — whether in the first resort, to the exam- 
iners- in- chief, or in the third resort, to the Supreme Court of the District 
of Columbia. 

As it is thus fully established that the present applicant, never having 
been rejected by me, has no grounds of appeal under the existing pro- 
visions of the law; that this interpretation, so far from being doubtful, 
has received the deliberate and iterated sanction of the honored Chief 
Justice before whom alone such an appeal could have been considered, 
and is therefore a res judicata — nay, that the said applicant is not only 
excluded from any legal right of such procedure, but that by more re- 
cent legislation he is expressly prohibited therefrom — it becomes una- 
voidably my duty, and is the only proper course left me, to refuse the 
admission of the appeal, and to decline submitting the same to the 
honorable Supreme Court of the District of Columbia. 

D. P. HOLLOW AY, 

Commissioner of Patents. 

(Recorded in vol. 9, page 323, Corner Decisions.) 



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